Suntiger v. Scientific

Citation51 USPQ2d 1811,189 F.3d 1327
Parties(Fed. Cir. 1999) SUNTIGER, INC. and BIOMEDICAL OPTICS COMPANY OF AMERICA, INC. Plaintiffs-Appellants, v. SCIENTIFIC RESEARCH FUNDING GROUP, Defendant, v. BLUBLOCKER CORPORATION, JS&A GROUP, INC., and JOSEPH SUGARMAN Defendants-Appellees. 98-1333 DECIDED:
Decision Date19 August 1999
CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Charles W. Shifley, Banner & Witcoff, of Chicago, Illinois, argued for plaintiff appellant. With him on the brief were Pamela I. Banner, Timothy C. Meece, and John F. Rollins.

George H. Gerstman, Gerstman, Ellis, & McMillin, Ltd., of Chicago, Illinois, argued for defendant-appellee. With him on the brief was Terrence W. McMillin. Of counsel on the brief were John E. Muench and Jeffrey W. Sarles, Mayer, Brown & Platt, of Chicago, Illinois.

Before PLAGER, Circuit Judge, FRIEDMAN, Senior Circuit Judge, and LOURIE, Circuit Judge.

Opinion for the court filed by Circuit Judge PLAGER. Circuit Judge LOURIE dissents.

PLAGER, Circuit Judge.

The United States District Court for the Eastern District of Virginia granted summary judgment of non-infringement of U.S. Patent No. 4,952,046 ("the '046 patent") against SunTiger, Inc. and Biomedical Optics Company of America, Inc. (collectively "SunTiger"), and in favor of BluBlocker Corp., JS&A Group, Inc., and Joseph Sugarman (collectively "BluBlocker"). See SunTiger, Inc. v. Scientific Research Funding Group, No. 97-423-A (E.D. Va. Feb. 13, 1998) (order).1 SunTiger appeals, arguing that there are genuine issues of material fact in dispute concerning the question of infringement. We agree, and vacate the district court's grant of summary judgment of non-infringement; the case is remanded for further proceedings.

BACKGROUND

The '046 patent, of which SunTiger is assignee, is directed to optical lenses for sunglasses that screen out certain wavelengths of visible light that may cause harm to human eyes after extended exposure. The lenses covered by the '046 patent incorporate an orange-colored, sharp cut-on dye that blocks out blue light while allowing other colors of light to be transmitted.

The application for the '046 patent was filed on July 25, 1988 as a continuation-in-part of an application, Ser. No. 352,706 ("the parent application"), that had been filed in 1982. The parent application discloses numerous possible ranges for transmission spectra of orange-dyed lenses for sunglasses. For instance, the written description of the parent application describes cut-offs at 512, 490, 510 and 520 nanometers ("nm"). See Joint App. at A150, Prosecution History of Application No. 352,706 at 8. In addition, the parent application provides a description and an illustration of characteristic transmission curves, lines 53, 54, and 55 of Figure 5 (shown below), of some suitable orange dyes. See id. at A151-52, Prosecution History at 9-10.

[Tabular or Graphical Material Omitted]

The written description of the '046 patent discloses a more limited range for transmission spectra for dyed lenses, as illustrated in Figure 1 of the patent (shown below). [Tabular or Graphical Material Omitted]

Claim 1, the only independent claim of the '046 patent and the only claim at issue, reads:

1. A lens worn in front of the eyes by humans, in an outdoor sunlit environment, where said lens is a filter barrier to photons deleterious to the eyes and that is also a transmitter of visible light most useful for high visual acuity, where said lens comprises:

(a) a transparent, organic plastic matrix material, and

(b) a sharp cut-on orange dye incorporated into said material that allows the lens to transmit at least 90% of the visible sunlight with wavelengths longer than 636 nm and block more than 99% of all sunlight with wavelengths shorter than 515 nm.

(emphasis added). As indicated by the claim language and as shown by Figure 1, the claimed transmission characteristics of the lens are 99% blockage at wavelengths shorter than 515 nm and 90% transmission at wavelengths longer than 636 nm.

SunTiger accused BluBlocker of infringing claim 1 of the '046 patent. Testing by SunTiger indicated that the accused BluBlocker lens incorporates an orange-colored, sharp cut-on dye that has the same transmission characteristics as set forth in claim 1, i.e., it blocks 99% of blue light and transmits 90% of other colors of light. However, in addition to the orange dye, the accused lens also incorporates a gray gradient surface coating that reduces the amount of visible light transmitted by the accused lens. The gray coating is darkest at the top of the lens and becomes progressively lighter towards the bottom of the lens. Due to the gray gradient coating, less visible light is transmitted at the top of the accused lens than at the bottom.

Testing of BluBlocker's accused lens also showed that with the gray gradient coating, no part of the accused lens met the transmission limitations of claim 1 except for the 'right bottom' portion of the accused lens where the gray gradient coating was lightest and allowed for the transmission of the most visible light. BluBlocker does not dispute that evidence was submitted that indicated the 'right bottom' of one of its lenses transmits 90% of visible light at 636 nm. See BluBlocker Reply Br. at 8, 30.

The only claim language that was disputed at the trial level and remains in dispute is part (b) of claim 1: "a sharp cut-on orange dye incorporated into said material that allows the lens to transmit at least 90% of the visible sunlight with wavelengths longer than 636 nm and block more than 99% of all sunlight with wavelengths shorter than 515 nm." The parties proposed differing claim interpretations to the district court. SunTiger proposed that the language should be interpreted to require the specified transmission characteristics to be a 'property' of the orange dye in the lens, rather than that of the lens. In other words, according to SunTiger, it is the dye, not the lens, that must have the critical transmission characteristics. In contrast, BluBlocker contended that the language should be interpreted to require the lens, not merely the orange dye, to have the critical transmission characteristics.

Based on a plain reading of the language of the patent itself, the district court agreed with BluBlocker that the claim is to a "specific type of lens that has a specific type of result," rather than to an orange dye with specific limitations. Joint App. at A66-69, Hearing Tr. Feb. 13, 1998 at 18-22 (before Judge Leonie M. Brinkema). Reasoning that the gray coating BluBlocker applies to its accused orange-dyed lens changes the transmission quality of the lens such that it is outside the scope of the asserted claims, the district court granted summary judgment of non-infringement to BluBlocker. See id. at A69-70, Tr. at 21-22.

SunTiger appeals from the summary judgment of non-infringement, mainly arguing that the district court erred in construing the transmission limitations of claim 1 to be a property of the lens, rather than a property of the orange dye embedded in the plastic of the lens. SunTiger further asserts that, even under the erroneous claim interpretation, BluBlocker's lens infringes claim 1 because the gray coating on BluBlocker's lens does not remove it from infringement.

In response, BluBlocker argues that SunTiger is collaterally estopped from bringing its current appeal (Docket No. 98-1333) regarding summary judgment of non-infringement because SunTiger previously voluntarily dismissed a related appeal (Docket No. 98-1419) challenging a separate court order2 in regard to a denial of treble damages and partial attorneys' fees from a separate defendant, SRFG. BluBlocker also responds that the district court properly construed claim 1 of the '046 patent and properly granted summary judgment of non-infringement. Moreover, BluBlocker argues that even if SunTiger could prove that claim 1 reads on the accused lens, there would be no triable issue because the patent is invalid.3 BluBlocker contends that the '046 patent is not entitled to the 1982 filing date of its parent application because the parent application did not disclose the transmission characteristics claimed in the '046 patent. Since SunTiger admits that there was a post-1982 sale, BluBlocker asserts that the patent is invalid and that the district court improperly denied BluBlocker's motion for summary judgment on invalidity.

DISCUSSION
A. Collateral estoppel

Before addressing the merits of SunTiger's appeal from the summary judgment of non-infringement, we first address BluBlocker's assertion that SunTiger is collaterally estopped from bringing the appeal due to SunTiger's voluntary dismissal of its appeal (Docket No. 98-1419) from an April 29, 1998 order. The April 29, 1998 district court order did not address the '046 patent. Instead, it dealt with the denial of SRFG's motion for JMOL on the finding of infringement and inducement of infringement of three SunTiger patents, not including the '046 patent. The order also denied treble damages to SunTiger and partially granted attorney fees to SunTiger.

In the interest of national uniformity, when considering appeals from a district court in patent cases we apply our own circuit law, except that with respect to purely procedural matters that are subject to local variation, we will customarily follow local law of the circuit in which the district court sits. See Atari, Inc. v. JS & A Group, Inc., 747 F.2d 1422, 1440, 223 USPQ 1074, 1087 (Fed. Cir. 1984) (en banc). With regard to when collateral estoppel applies in a case, the Fourth Circuit, home to the Eastern District of Virginia, has said,

[c]ollateral estoppel is appropriate where the identical issue was "actually litigated, that is, contested by the parties and submitted for determination by the court," where the issue...

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